'Adapted to' after Aspex

Abstract

A recent trio of Federal Circuit cases has ignited a debate on the inherent meaning of the often-used linking phrase “adapted to.” Under the new intrinsic evidence standard, “adapted to” may mean “capable of” or “configured to,” but is initially presumed to mean “configured to.” The presumption can then be confirmed or rebutted with intrinsic evidence from the claims and specification. The intrinsic evidence test has caused three problems for patent prosecutors and litigators alike. First, the presumption of the narrower “configured to” violates the broadest reasonable interpretation standard at the Patent & Trademark Office. Next, the use of intrinsic evidence unavoidably imports limitations from the specification into the claims. Finally, litigators have (and will continue to) exploit the two definitions of “adapted to” by advocating for either the broad definition or the narrow definition, depending upon whether the party owns the patent in question. A better and case law-consistent solution is readily available in the MPEP, however.If “adapted to” can mean “configured to,” then the initial inquiry should be to determine whether the “adapted to” element is purely functional. If it is, then the next inquiry should be whether the element is valid under 35 U.S.C. § 112(f). If so, then it should be construed as a “means for” element. If not, the claim is indefinite under 35 U.S.C. §112(b).If the “adapted to” element is not purely functional and contains some structural elements, then it should be treated the same way as any other functional element. If there is sufficient structure in the claim, then it is valid. If not, the claim is again indefinite. Note that in this latter category, claim construction is unaffected by whether “adapted to” means “configured to” or “capable of.”This new inquiry does not hinge on the definition of the term as much as it does the structure of the claim. It also allows the PTO to return to BRI without importing limitations from the specification. Additionally, making “adapted to” an acceptable linking phrase under §112(f) would allow the courts to employ seventy years of §112(f) case law in construing the element.